After Final Consideration Pilot 2.0 (AFCP 2.0)

The After Final Consideration Pilot 2.0 (AFCP 2.0)[1] authorizes additional time for examiners at the U.S. Patent and Trademark Office (USPTO) to consider responses after final rejection.  The AFCP 2.0 also allows an applicant to amend at least one independent claim after final rejection that does not broaden the scope of the independent claim in any aspect.  The goal of the AFCP 2.0 is to reduce the pendency of applications by decreasing the number of Requests for Continued Examination (RCE) and by increasing collaboration between examiners and applicants to advance prosecution.  The After Final Consideration Pilot 2.0 requires no additional fee, and the USPTO has extended the AFCP 2.0 to run through September 30, 2016.

Under non-pilot practice, a response after final rejection may not have sufficient basis to be considered by the examiner, for instance responses that would require further search and/or consideration.[2]  However, the AFCP 2.0 allows applicants to file a request to have such a response considered without reopening prosecution.  The AFCP 2.0 authorizes a limited amount of time for examiners to consider a response after final rejection and to conduct further searching.  If the submission does not place the application in condition for allowance, examiners can also use the additional time to conduct an interview with the applicant to discuss the results of any further consideration and/or searching for the AFCP 2.0 submission.

Eligibility:

To be eligible for the AFCP 2.0 an application must have an outstanding final rejection and be either an original utility, plant, or design application filed under 35 U.S.C. 111(a), including continuation and divisional applications, or be an international application that has entered the national stage in accordance with 35 U.S.C. 371(c).  Reissue applications, reexamination proceedings, and provisional applications are not eligible for the AFCP 2.0 program.

The AFCP 2.0 is a modification of an earlier After Final Consideration Pilot (AFCP) program.  The AFCP 2.0 has three main differences over the AFCP: the applicant must request consideration under the AFCP 2.0, at least one independent claim must be amended in the response for the AFCP 2.0, and the examiner must request an interview with the applicant if the response does not result in a determination that all the claims are allowable.

A request for consideration of an amendment after final rejection under AFCP 2.0 must include:

(1)   Transmittal Form – A transmittal form identifying an AFCP 2.0 submission and requesting consideration under AFCP 2.0.  An applicant can use form PTO/SB/434 for the transmittal form.[3]

(2) Amendment – An after final response under 37 CFR 1.116 with an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect.  To determine whether the claims have been broadened, the claims will be analyzed analogously to the guidance provided for reissue claims in MPEP 1412.03.

(3) Interview Statement – A statement indicating that the applicant will participate in any examiner initiated interview concerning the response.  Transmittal form PTO/SB/434 contains the required statement.

(4) Applicable Non-Pilot Fees – Any necessary fees consistent with current non-pilot practice regarding an after final response under 37 CFR 1.116, for instance fees for extension of time are still required.

All papers filed under the AFCP 2.0 must be filed electronically via the USPTO’s Electronic Filing System-Web (EFS-Web).  An incomplete submission will be processed consistent with current non-pilot practice for responses after final rejection under 37 CFR 1.116.

An applicant can only file one request for consideration under the AFCP 2.0 for an outstanding final rejection.  Additional requests will be treated under current non-pilot practice concerning responses after final rejection under 37 CFR 1.116.

Processing:

The examiner will verify that the submission complies with the requirements of the AFCP 2.0 program.  The examiner will perform an initial review of the amendment and determine whether additional search and/or consideration is necessary to determine if the amendment distinguishes over the prior art.  The AFCP 2.0 program gives examiners up to an extra 3 hours to review plant and utility applications, or 1 hour plus any time attributed to an interview for design applications, along with a 10 day adjustment to the docket management clock.[4]  If additional search and/or consideration is required but could not be conducted within the allotted time, the examiner will issue an advisory action and the submission will be possessed under current non-pilot practice for responses after final rejection under 37 CFR 1.116.

If additional search and/or consideration is not required, or could be completed in the allotted time, the examiner will perform any required search and/or consideration and determine whether the amendment places the application in condition for allowance.  If in condition for allowance, the examiner will enter the amendment and issue a notice of allowance.  If the response does not result in a determination that all of the claims are in condition for allowance, the examiner will request an interview with the applicant.  The examiner will follow the interview with an appropriate response in accordance with the current non-pilot practice to a submission after final rejection.  If the applicant is unable to schedule an interview within 10 calendar days from being contacted by the examiner, the examiner may proceed under current non-pilot practice.

After considering the AFCP 2.0 submission, the Examiner will issue an AFCP 2.0 Response Form (PTO-2323) indicating the disposition of the submission.[5]  The form is designed to improve communication with the applicant by clearly indicating how the examiner treated the AFCP 2.0 submission.  The form will provide the status of the submission and will accompany an interview summary, if applicable.  While the USPTO goal for examiners is to respond as soon as possible to after final amendments, applicants are advised to contact the examiner if they have not received a response within one month of filing the AFCP 2.0 request.

AFCP 2.0 and Additional After Final Filings:[6]

An AFCP 2.0 submission can be filed after a previously filed non-pilot after final amendment.  The previously filed amendment will be processed as usual, e.g. by mailing an advisory action.  However, an AFCP 2.0 request should not be filed to transform a previously filed non-pilot after final amendment into an AFCP 2.0 submission, even if a response to the previous amendment has not yet been received.  The AFCP 2.0 request form should be filed concurrently with a proposed amendment to ensure synchronization between USPTO databases.

If the applicant has already received an advisory action in response to a non-pilot after final amendment, the applicant can still file an AFCP 2.0 request.  If the applicant has already filed a notice of appeal, the applicant can still file an AFCP 2.0 request provided the applicant has not filed an appeal brief or a Pre-Appeal Brief Conference Request.  The applicant can also file a notice of appeal concurrently with the AFCP 2.0 request.

Conclusion:

After a final rejection, an applicant does not have a right to further unrestricted prosecution and only in limited situations are further amendments or arguments considered.  Therefore, consider filing a response to a final rejection with a non-broadening amendment to an independent claim under the AFCP 2.0 pilot program if you believe that the response will place the application in condition for allowance with only minimal further consideration and/or searching by the examiner.  Even if the application is not allowed, an applicant can benefit from additional consideration, search, and an interview with the examiner under the AFCP 2.0 program.

[1] After Final Consideration Pilot Program 2.0, 78 Fed. Reg. 29117 (May 17, 2013).

[2] See MPEP 714.12-714.13.

[3] CERTIFICATION AND REQUEST FOR CONSIDERATION UNDER THE AFTER FINAL CONSIDERATION PILOT PROGRAM 2.0, http://www.uspto.gov/sites/default/files/forms/sb0434.pdf (last visited Jan. 11, 2016).

[4] Guidelines for Consideration of Responses After Final Rejection under 37 CFR 1.116(b) under the After Final Consideration Pilot 2.0 (AFCP 2.0), http://www.uspto.gov/sites/default/files/patents/init_events/afcp_guidelines.pdf (last visited Jan. 11, 2016).

[5] After Final Consideration Pilot 2.0, http://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20 (last visited Jan. 11, 2016).

[6] FREQUENTLY ASKED QUESTIONS – AFCP 2.0 PILOT PROGRAM, http://www.uspto.gov/sites/default/files/afcp%202-0%20faq.pdf (last visited Jan. 11, 2016).